THE INDIAN PATENT ACT - 1970

Presented by: Akash U. Wani

M.Pharm – 3rd semesterDept. of Pharmaceutics

Govt. college of Pharmacy, Aurangabad

INTELLECTUAL PROPERTY• Intellectual property is the product or creation of the mind.

It is different from other properties in term that it is “intangible”. Hence it needs some different way for its protection.

INTELLECTUAL PROPERTY RIGHTS• IPR is the body of law developed to protect the creative

people who have disclosed their invention for the benefit of mankind. This protects their invention from being copied or imitated without their consent.

THE INDIAN PATENT ACT • In India the grant of patents is governed

by the patent Act 1970 and Rules 1972. • The patents granted under the act are

operative in the whole of India.

HISTORY The Patent Law of 1856 The Patent and Designs Act, 1911. The Patents Act, 1970 and Rules 1972 The Patent amendment act 2005

What is a patent ?

• A patent is a grant from the government which confers on the guarantee for a limited period of time the exclusive privilege of making, selling and using the invention for which a patent has been granted

Purpose of getting a patent……

• To enjoy the exclusive rights over the invention.

• The patent is to ensure commercial returns to the inventor for the time and money spend in generating a new product.

What can be patented?

• In order to be patentable , an invention must pass four tests;

1. The invention must fall into one of the five “statutory classes’: Processes, Machines , Manufactures Compositions of matter, and New uses of any of the above

2. The invention must be “useful” 3. The invention must be “novel”4. The invention must be “nonobvious’

Patent Law - Salient Features• Both product and process patent provided• Term of patent – 20 years• Examination on request• Both pre-grant and post-grant opposition • Fast track mechanism for disposal of

appeals• Provision for protection of bio-diversity

and traditional knowledge• Publication of applications after 18

months with facility for early publication• Substantially reduced time-lines

Safeguards in the Patent Law• Compulsory license to ensure availability

of drugs at reasonable prices• Provision to deal with public health

emergency • Revocation of patent in public interest

and also on security considerations

Types Of Patents

• Three types of patent are granted under the provisions of the act, namely:

1. An Ordinary Patent2. A Patent Of Addition 3. A Patent Of Convention• A second type of classification of patent

is: 1. Product Patent 2. Process Patent

Patentable Inventions

Invention must

Relates to a process or product or both

Be new (novel)

Involves an inventive step

Be capable of industrial application

Not fall under section 3 and 4

“NEW” MEANS……….

Invention must not bePublished in India or elsewhereIn prior public knowledge or prior public use with in IndiaClaimed before in any specification in India

Inventive step means…

A feature of an invention that Involves technical advance as compared to the existing knowledge..

Industrial application means…Invention is capable of being made or used in any kind of industry.

Section 3 exclusions

Section 3(a) • Inventions contrary to well

established natural laws

Examples Machine that gives more than 100%

performance Perpetual machine

Section 3(b) Commercial exploitation or primary use of inventions, which isContrary to

public order or Morality

Examples– Gambling machine, – Device for house-breaking ,

Section 3(b) Commercial exploitation or primary use of inventions , which

Causes serious Prejudice to health or human, animal, plant life or to the environment

Examples Biological warfare material or

device, weapons of mass destruction

Terminator gene technology, Embryonic stem cell

Non Patentable Inventions• Inventions falling within Section

20(1) of the Atomic Energy Act, 1962

are not patentable

Eg: Inventions relating to compounds

of Uranium, Beryllium, Thorium,

Plutonium, Radium, Graphite, Lithium

and more as notified by Central Govt.

from time to time.

The Term Of Patent : 

In respect of a invention claming process of manufacture of a substance intended to be used as food or medicine ---- 5 yrs from the date of sealing or 7 yrs from the date of patent whichever is shorter.

In case of any other invention ---- 14 yrs from the date of patent.

Expiry Of A Patent • A patent can expire in the following

ways: 1. The patent has lived its full term. 2. The patentee has failed to pay the

renewal fee. 3. The validity of the patent has been

successfully challenged by an opponent by filing an opposition either with the patent office or with the courts.

4. As soon as the patent expires, it pass to the general public domain and now anybody can use it without the permission of the original inventor

STAGES FROM FILING TO GRANT OF A PATENT

Obtaining A Patent

• File an application for patent– With one of the patent offices based

on territorial jurisdiction of the place of office or residence of the applicant /agent

– Pay the required fee• Information concerning application form

and details of fee available at www.ipindia.nic.in

• Guidelines for applicants also available on this website

Formality Check• An Examiner checks the formal

requirements before accepting the application and the fee – this is done immediately

• Issue of application number and the cash receipt – this is done the same day

• In case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days

Publication• Application is kept secret for a period of

18 months from the date of filing• In 19th month, the application is

published in the official journal – this journal is made available on the website weekly

• Applicant has an option to get his application published before 18 months also

• In that case, application is published within one month of the request

Request for Examination

• Application is examined on request• Request for examination can be made

either by the applicant or by a third party• A period of 48 months, from the date of

filing, is available for making request for examination

Examination

• Application is sent to an Examiner within 1 month from the date of request for examination

• Examiner undertakes examination w.r.t.– whether the claimed invention is not

prohibited for grant of patent – whether the invention meets the

criteria of patentability

Issue of FER

• A period of 1 to 3 months is available to Examiner to submit the report to the Controller

• 1 month’s time available to Controller to vet the Examiner’s report

• First Examination Report (FER) containing list of the objections is issued within 6 months from the date of filing of request

Response from the Applicant

• 12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections

• If objections are met, grant of patent is approved by the Controller – within a period of 1 month

Pre-grant Opposition

• After publication, an opposition can be filed within a period of 6 months

• Opportunity of hearing the opponent is also available

Examination of Pre-grant Opposition

• Opposition (documents) is sent to the applicant

• A period of 3 months is allowed for receipt of response

Consideration of Pre-grant Opposition• After examining the opposition and the

submissions made during the hearing, Controller may – Either reject the opposition and grant

the patent – Or accept the opposition and

modify/reject the patent application • This is to be done within a period of 1

month from the date of completion of opposition proceedings

Grant of a Patent

• A certificate of patent is issued within 7 days

• Grant of patent is published in the official journal

STAGES - FILING TO GRANT OF PATENT

PUBLICATION OF APPLICATION

REQUEST FOR EXAMINATION

GRANT OF PATENT

3rd Party Representation

Revocation/Amendment

OPPOSITION

• PROMPTLY AFTER 18 MONTHS FROM F.D.

• WITHIN 48 MONTHS FROM F.D.

• ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS

• WITHIN 12 MONTHS

FILING OF APPLICATIONPROVNL. / COMPLETE

Decision of Controller

EXAMINATION-ISSUE OF FER

Appellate BoardAppeal

Renewal Fee• To be paid within 3+6 months from date

of recording in the register [sec 142 (4) ]• No fee for 1st and 2nd year• Renewal fee, on yearly basis, is required

to be paid for 3rd to 20th for keeping the patent in force

• Delay upto six months from due date permissible on payment of fee for extension of time

• Patent lapses if renewal fee is not paid within the prescribed period

Rights of a patentee1. Right to exploit the patent. The patentee has a right to prevent 3rd parties,

from exploiting the patented invention.2. Right to grant license. The patentee has a power to assign rights or

grant license.3. Right to surrender. The patentee is given the right to surrender the

patent by giving notice in prescribed manner to the controller.

4. Right to sue for infringement. A patentee is given the right to institute

proceeding for infringement of the patent in a district court .

References1. www.ipindia.nic 2. www.patentoffice.nic3. www.wikipedia.org4. www.patentoffice.nic.in/ipr/patent

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